u>^ 



Protection 



OF 



I ndustrial Property 



A Popular Treatise upon the Laws and Rules 
Relating to 

Patents for Inventions. 



BY 



HENRY SCHREITER. 



NEW YORK. 

1897. 



t 



Protection 



OF 



I ndustrial Property 



A Popular Treatise upon the Laws and Rules 
Relating to 

Patents for Inventions. 






BY 



/ 
HENRY SCHREITER. 



NEW YORK. 
1897. 



SECOND COPY. 






OXOIO 



Copyright, 1897. 
By Schreiter, Van Iderstine & Mathews. 



3 5 

| X/ UN* * CO., PRINTER*, 1 BOWLING GREEN A 6* tEAVER ST., N. T. 



1^ 






PREFACE. 

THE progress and wide expansion of our industries is 
due not only to the rich resources of our country, the 
enterprise and relentless energy of our people, but also to 
a very great extent, to our efficient system of Laws for 
Protection of Industrial Property. This system is founded 
upon the broad and equitable principles laid down by the 
provident and farseeing framers of our Constitution. 

In framing of our Patent Laws manifold difficulties 
were encountered in the early years of our national inde- 
pendence. The then prevailing diversity of opinions, as 
to the policy of such laws, swayed from one extreme to 
the other and produced uncertainty in their administration. 

In course of time those conflicting views were harmon- 
ized, Congress enacted liberal and effective laws, and the 
Courts supplemented them progressively by clear, logical 
and comprehensible decisions. These laws now compose 
the structure of one of the most liberal and advanced 
Patent Systems of the world. 

Our laws, relating to protection of industrial and in- 
tellectual property, are as important as any other branch 
of the Laws of Property ; but among the presumptively 
more intelligent creators of this category of wealth are 
found many more of those who are devoid of even a 
rudimental knowledge of these laws, than among any 
other class of property holders. 

The purpose of this publication is to diffuse reliable 
information upon these subjects. Many of the articles, 
compiled here, were previously published in different 
periodicals, having been written from time to time during 
the years of my practice as occasions have arisen ; they are 



for that reason not less worthy of attention. They have 
all been revised and brought up to date. 

The States found it a sound policy to encourage the 
inventive activity of their citizens by enacting laws se- 
curing to them liberal privileges for the utilization of the 
results of their labors ; and, I trust, it will be found no 
less sound policy for all those most directly interested, 
to learn how to acquire the greatest share of the privi- 
leges created by those liberal protective laws. 

H. S. 
New York, March, 1897. 



INTRODUCTORY. 

THE term " Industrial Property" is used here to desig- 
nate the products of invention and discovery in arts 
and industries; it may, in a broader sense, be also applied 
to results of scientific researches, to literary and artistic 
inventions, to reproductable creations of scientific, literary 
or artistic labors, and, in a yet broader sense, to labels or 
marks, used to distinguish in trade industrial products 
of one producer from those of others. 

A " patent" does not create the right of ownership to 
an invention ; this right was created (and at the same time 
acquired) by the inventor by the act of his invention. 

An author or an inventor could not maintain his right 
of ownership against others (subsequent discoverers or 
those desiring to use his invention) without help of the 
government, and for this reason, to save to himself what is 
his own, he must necessarily obtain a Letters Patent. 

The mediaeval theories, from which all systems of laws 
governing industrial property were developed, assumed 
that a "King" as the "Lord" of all the land, is also 
the supreme owner of everything produced or acquired by 
his subjects. From this theory the prerogative (compe- 
tency) of the King to grant possession of land for use and 
utilization thereof, and to farm out commercial or manu- 
facturing privileges was deducted. 

These rights of the king were never disputed and they 
were originally utilized mainly for the purpose of enrich- 
ing the grantor's exchequer by exacting tributes for 
grants of exclusive privileges, and by taxation of manu- 
facturers and merchants generally. 

Owing, to the misuse of this privilege, the Parliament 
of England revolted, at the beginning of the seventeenth 



6 

century, against what was then termed monopolies, and 
after prolonged discussions and negotiations with the 
King, then James I., the memorable "Act of 1623," the 
first Patent Law in any country of the world, was drafted 
and adopted. 

This act recognized the prerogative of the Crown to 
grant exclusive privileges (patents) for manufactures, but 
limited it, expressly stating, that such letters patent or 
grants of privileges shall not exceed the term of fourteen 
years, and that they may be granted only to the first and 
true inventor of a new manufacture or of such improve- 
ments thereon, which at the time of granting such letters 
patent, shall not have been used by others or generally 
known. 

The phenomenal progress in all industries, that fol- 
lowed the enactment of this law in England, caused the 
enactments of similar laws in other continental states. 

All these laws have been from time to time modified 
and amended, to keep pace with the progress and devel- 
opment of new industries, and, subsequently, also laws for 
the protection of trade-marks and copyrights were added 
thereto. 

In the United States, as long as the states, composing 
the Union, remained English colonies, the same Statute of 
Monopolies was in force here as in England. After the 
Declaration of Independence, each of the original thirteen 
states claimed for itself the right to grant such privileges; 
there were, however, only a few "Letters Patent" act- 
ually granted during the revolutionary period. 

By the eighth section of the first article of the Consti- 
tution, adopted in 1787, the prerogative or power to grant 
Patents and Privileges was invested in the Congress of the 
United States. 

The legal conditions were thus well provided and it de- 
pends only on the diligence of inventors to secure to them- 
selves the results of their labors. 



THE PATENT LAWS OF UNITED STATES. 

THE laws relating to the granting of Letters Patent in 
United States are contained in the Revised Statutes. 
All patents, certificates, copyrights, etc., are issued in the 
name of United States and the jurisdiction in all cases 
arising from patents is vested in the Federal Courts. 

The United States Supreme Court has repeatedly- 
passed on the enactment of the Constitution regarding 
the grant of patents and also on the scope and constitution- 
ality of the laws enacted by the Congress for the purpose. 
From the findings of this court the following maxims may 
be gathered : 

The power of Congress to grant patents is general, but 
in the exercise of this power the Congress is limited to 
authors and inventors only. 

The powers of Congress to legislate upon the subject of 
patents are plenary ; it is in its (sound) discretion to de- 
cree conditions for granting of patents for inventions, 
their term and limitations. 

There is no restraint on the exercise of its discretion 
and no limitation of its right to modify any laws enacted 
for the purpose at any time. 

No State can legislate to limit or restrict in any man- 
ner the privileges of any, or of all inventors which the 
Letters Patent confer, and any act giving a State legisla- 
ture or to any executive organ such power, or any act at- 
tempting to limit the privileges of an inventor, is con- 
trary to the Constitution and void. 

The government is bound to grant the patent; it, 
however, exacts from the inventor, for the sake of public 
interests, a limitation of his right of ownership expressed 
in the stipulation, that after a certain time the patented 



8 

invention shall become public property. Thus a patent 
becomes a terminable franchise or privilege, vesting in the 
inventor, by the authority of the government, the exclu- 
sive right to utilize in every possible manner that particu- 
lar invention during a period stipulated by law. Such 
privilege or franchise, granted under a United States 
Letters Patent, consists of the exclusive right to make, use 
and vend the invention or the products thereof in the terri- 
tory of United States for a period of seventeen years. 

Congress created two kinds of patents : 

1. Special Patents to be granted by special acts of Con- 
gress, and conferring wider or more exclusive privil- 
eges on individual inventors. 

2. General Patents to be granted by the executive de- 
department of the government in accordance with 
the provisions of laws enacted for that purpose. 

The first act of 1790 authorized the Secretaries of 
State and of War, and the Attorney General (or any two 
of them) to grant to an inventor, whose invention they 
considered "sufficiently useful and important," the exclu- 
sive right to manufacture, use and vend his invention for 
a period not exceeding fourteen years. 

This act was amended three years later by relieving 
the Secretary of War from this duty, and authorizing the 
Secretary of State to grant patents, subject to the ap- 
proval of the patent to be granted by the Attorney Gen- 
eral. This act also stipulated the mode of procedure, 
penalty for inf ringments, and (for the first time) attempt- 
ed to define what constitutes an invention as distin- 
guished from mechanical skill. 

The patents were to be issued on the statements of 
inventors describing in general terms the alleged inven- 
tions, but no examination was made as to its novelty, and 
not until later (Act of 1800) were the inventors required 
to file with their applications an oath "that to the best of 
their knowledge" the invention was never before known 
or used in this or any foreign country. The same Act 
(1800) provided that a proof of previous use of an inven- 
tion described in the application shall prevent the issue 



of the patent and render any patent void that might have 
been granted. The patents were engrossed in books, kept 
in the Department of State at that time, and open to public 
inspection, but no list of such patents was ever issued. 
The publication of the lists of issued patents was provided 
by Chapter 162, Laws of 1832. From that time on, the An- 
nual Reports of the Commissioner of Patents were regu- 
larly published. Act of 1836 provided the fundamental 
organization of the Patent Office, rules for the conduct 
of its business, made the investigations as to the novelty 
of inventions mandatory and provided for filing of caveats, 
defining also the rights of caveators obtained thereby. 

Until 1839 no patents could be granted in United 
States for any inventions that were previously patented or 
used in foreign countries. The Act of 1839 stipulated 
that patents granted for an invention in foreign countries, 
shall not prevent the grant of a patent in the United 
States (to the same inventor) if he applied for it within six 
months from the issue of the foreign patent. 

The term of patents was invariably fourteen years, 
until the Act of 1848, authorizing the Commissioner of 
Patents to extend the grant for seven years longer. 

Until 1861 there was no limit to the time in which an 
application for a patent should be completed and no limit 
to the time in which the application should be prosecuted. 
The Act of 1861, which also created Patents for Designs, 
to be issued for periods of three and one half years, 
seven and fourteen respectively, according to the petition 
of the inventor, decreed that all applications for patents 
must be completed two years from the date of filing. 

The same act extended the term of patents to seven- 
teen years, abolishing at the same time the power of the 
Commissioner to extend the term, and ordered that every 
patented article shall be so marked "by printing or other- 
wise afiixing thereon" a label, containing the word "Pat- 
ented " and the date of patent. 



GENERAL RULES. 

The true and first inventor or discoverer of any new 
and useful art, a new and original design, a new com- 
position of matter, a new machine, new article or pro- 
cess of manufacture, or of any improvement thereon, not 
before known or used in this country, may obtain a 
patent, if he did not, prior to his application, abandon 
this invention to public use. 

The proof of prior (anticipating) knowledge or use of 
an invention must be practical and complete to defeat an 
inventor's claim for a patent. The identical invention 
must have been in use in this country, or patented, or de- 
scribed in a printed publication at home or abroad before 
the other was invented. 

If there be a reasonable doubt as to the identity be- 
tween a device previously known or used and the one 
sought to be patented, such doubt will be resolved in 
favor of the claimant of the patent. 

If a prior patent is cited as anticipation of an inven- 
tion, sought to be patented, it must be proven, that the 
patent cited was a public document, accessible to the 
public, issued for the same invention, for the same oper- 
ative means, and that the description or specification 
thereof is reasonably sufficient to place the idea of the 
inventor fully in possession of the public. Only such 
prior patent will defeat the grant of a patent for an in- 
vention subsequently made. 

A mere description of an invention in a previously 
filed application, on which a patent was not granted, or 
not issued, or the grant of a patent in a country, where 
patents are not publicly issued, will not prevent the grant 
of a patent to a subsequent inventor in this country. 

An inventor in this country can defy a foreign patent, 
that would otherwise bar the granting of a patent to him, 



11 

if he can prove that he completed his invention, in this 
country, before the foreign patent was published. 

In the same manner a subsequent inventor can defy a 
previous United States patent describing partly or wholly 
his invention, but not claiming it, if he can prove that he 
completed his invention before the application for the 
prior patent was filed. 

A prior publication cannot be cited as barring the 
issue of a patent, unless the publication was made in a 
work of public character, intended for general use and 
placed within the reach of the public. 

Such publication must contain a description of the 
same complete and operative device as described and 
claimed in the patent, in such precise and particular man- 
ner, that any person, skilled in the art to which it per- 
tains, may reasonably be expected to construct and operate 
it without necessity of an experiment or further exercise 
of inventive skill. 

The United States Patent Laws permit the sale of an 
invention for a period of two years prior to the applica- 
tion for a patent. Public use or sale of an invention in 
foreign countries is not at all a bar to the granting of a 
patent in the United States. 

It must, however, be borne in mind, that an inventor 
who consented to public use or sale of his invention and 
delayed his application for a patent for more than two 
years thereafter, will be presumed to have deliberately 
abandoned his invention to the public. 

It is not necessary that the sale or use should have 
been carried on continuously; it is sufficient to prove that 
an invention was used or sold once at a time more than 
two years prior to the application for a patent, to render 
a subsequently granted patent absolutely void. 

An invention once abandoned to public use cannot be 
recovered by the inventor. 

Such an abandonment can be inferred from the inven- 
tor's aquiescence in the use of the invention by others, or 
from his neglect to assert his claims, or even by his neg- 



12 

lect to make efforts to realize a personal advantage from 
the result of his invention. 

If a person secures fraudulently a foreign patent, he 
cannot thereby deprive the original, true and first in- 
ventor of his right to a Letters Patent of United States. 
A fraudulently obtained patent will be defeated on proper 
showing. 

An inventor could assign or sell his invention before 
he applies for a patent, but because his assignee could not 
obtain the patent, it is always required by those who in- 
terest themselves in an invention, that the inventor first 
procure the allowance of the patent, before a contract, 
conveying the invention, is made valid or operative. 

If an inventor dies before he applies for a patent, the 
administrator of his estate can make the application, and he 
is also authorized to prosecute an application which was 
filed by the inventor before his death. The same right 
acquires the assignee of an entire interest in an invention, 
if the inventor himself purposely neglects to prosecute his 
application or abandons it. 

If there are more than one inventor, they must apply 
jointly for one patent; no one of them is entitled to apply 
for himself alone or for himself and the others; on the 
other side, if two or more inventors produce, independ- 
ently of each other, the same invention, they cannot 
obtain a patent as joint inventors, but each of them must 
apply for himself, and they must contest their claims in 
proceedings, instituted to ascertain which of them is the 
first and true inventor. If in these proceedings is proven, 
that two of them made practically the same invention 
independently of each other at the same time, neither is the 
"first" and neither can receive the patent. 

In partnerships where one party furnishes the means 
to an inventor to produce a practical embodiment of his 
inventive idea, they may obtain the patent as joint hold- 
ers, (not as joint inventors). The proper course in such 
case is, that the inventor applies for the patent and with 
the application files an assignment of an undivided share 



13 

in the invention, and in the patent to be granted therefor, 
to the other party. 

Separate but dependent inventions may be joined in 
a single application, but separate or distinct inventions, 
capable of separate use, must be covered by separate 
patents. 

The grant of a patent conflicts with no public interest, 
either actual or possible, and for this reason the Courts are 
always disposed to construe the grant liberally in cases of 
conflict, in order to secure to the grantee all the advan- 
tages that it was intended, or might have been intended, to 
bestow upon him. 

A patent is held to be the prima facie proof of the in- 
ventor's rights. The courts hold invariably that any- 
one, disputing these rights, must prove the invalidity of 
the patent. The burden of proof in such cases is imposed 
upon the party asserting such state of facts. 

Under these conditions a Patent is the most reliable 
means of securing to an inventor and to his legal succes- 
sors and representatives, all the benefits, rights and privil- 
eges acquired by virtue of his inventions. 

A patent is like a certificate of ownership, assignable 
under law, and can be transferred for a valuable consider- 
ation, deeded, or bequeathed by will. 

The inventor or his legal successors and representa- 
tives can also issue licenses, territorial or otherwise, and 
for any term within the life of the patent, to others. Such 
licenses may authorize the grantees to exercise either some 
or all rights and privileges granted unto them. Thus an 
inventor, who may not be able to utilize his invention di- 
rectly, may derive benefit therefrom by disposing of his 
rights to others. 



PRELIMINARY EXAMINATION. 

s soon as an inventor succeeds in embodying his inven- 
tion into a practical form, lie should take steps toward 
securing to himself the result of his labors, even if the 
form is yet crude and capable of improvement. 

The first step in this direction is the lt Preliminary E 
amination^ as to the patentability of the invention. Th 
preliminary examination is always useful and necessar 
Inventors are very apt to assume, that the product ( 
their labors is certainly original and new, and yet in man 
cases the preliminary examination reveals that simile 
inventions or parts of the means used, are already covere 
by patents. [ 

If the preliminary examination discloses that patent 
have already been granted for similar inventions, or fo 
some parts thereof, the inventor will be benefited b; 
being thus advised of the means employed by his prede 
cessors. In most cases he will then be able to devis* 
some new means, excelling those disclosed in patents, anc 
to obtain patents for such improved devices. 

If the preliminary examination discloses that no pat 
ents have yet been granted touching his invention, he will 
with the assistance of a capable and reliable counsel 
secure for himself broad, generic claims for his invention, 
covering also all means, that might be used for the objecl 
of his invention. 

The more promising an invention, the more necessary 
it is for the inventor to exercise due care to preserve for 
himself the results of his work. 

The law is well settled on the point, that the true 
and first inventor is the one who first reduced the in- 
vention to practical utility, and to him the patent must 



15 

be granted, provided he did not neglect to apply for it 
and to prosecute his application with reasonable diligence. 
It is only natural to assume that other inventors work 
on the same field, and will, if successful, claim the patent. 
There are also always other people who desire to appro- 
priate the results of an inventors labors, and these do not 
discard even dishonorable means to obtain the informa- 
tion. 

An inventor should keep a diary and enter therein for 

his own information, any idea that may occur to him in 

the course of his work. He should also note carefully the 

progress and results of any experiments he undertakes, 

nd if he is obliged to disclose to others a part or the whole 

£ his invention, he should note this, and stating date and 

VLace of such disclosure, the full name and residence of 

he party or parties to whom he disclosed his invention 

.nd have this memorandum attested by their signatures 

>r by the signature of some disinterested witness. 

The inventor should keep his memoranda in chrono- 
ogical order and note everything of importance and inter- 
est regarding his invention. He should also illustrate by 
sketches as much as admissible, the means by which he 
produced his experiments, and the results thereof. 



CAVEATS. 

IN cases where the inventor knows or believes that 
others are working on the solution of the same prob- 
lem, or when he is obliged to disclose indiscriminately the 
whole or some part of his invention, he must secure to 
himself the priority of his inventive idea, and of the 
means whereby to attain the object of his invention, by 
filing a caveat. 

A caveat is in the nature of a notice given to the 
Patent Office of the caveator's claim as an inventor, to 
prevent the grant of a patent to a subsequent applicant 
for the same invention without due notice to the caveator. 
The right to file a caveat was originally restricted to citi- 
zens of United States ; since the conclusion of the Inter- 
national Union this right, however, is extended also to 
alien residents, who have resided for at least one year, 
next preceding the application, within the United States, 
and made oath of their intention to become citizens thereof. 
The application for filing of a caveat comprises a peti- 
tion, a specification and an oath. When the nature of 
the case admits of it, a drawing also must be submitted. 
The description must disclose, in a preliminary manner, 
the nature and object of the invention, and the means 
whereby the attainment of the object is contemplated or 
reached, as far as the inventor is at that time able to give. 
The object of the invention, and the distinguishing char- 
acteristics thereof, must be disclosed in a sufficiently pre- 
cise manner to enable the Patent Office to judge as to the 
probable interference with a subsequent application. 

The fee for filing a caveat is $10.00, and the term 
thereof is one year from the date of the filing. 

The petition requests that the preliminary description 



17 

of the invention be filed in the confidential archives of the 
Patent Office, and that the caveator be protected in his 
rights until he shall fully mature his invention. 

If the invention appears to be such as would be en- 
titled to be protected by a patent when completed, the 
preliminary description is accepted by the Commissioner, 
is sealed, the name of the caveator and a short statement 
of the nature of the invention indorsed on the envelope, 
and then filed in the confidential archives of the Patent 
Office. A certificate of the filing of a caveat is then mailed 
to the caveator, and proper notice thereof is given to the 
chief of the division into which the invention would be 
properly classified. 

The effect of the filing of a caveat is that if at any time 
during the term of the caveat some one else applies for a 
patent claiming substantially the same or similar invention, 
or a substantial part thereof, the action on such application 
will be suspended and the caveator will be notified thereof. 

The caveator will then be required to file within three 
months from the date of mailing to him of such a notice, 
a complete application for a patent for his invention as far 
as he shall have accomplished the same at that time. 
He will then be entitled to an interference with the con- 
flicting application for the purpose of proving his priority 
of invention. He will obtain the patent for the whole or 
for as much of his invention as he will be able to prove to 
have completed before the interfering application was filed. 

Certified copy of a caveat is admissible in evidence as 
proof of conception of an invention. 

A caveat can be renewed from year to year, but a new 
fee must be paid for each renewal. 

A caveat confers no other rights and affords no other 
protection except as here explained, nor is it assignable to 
others, though the invention for which it is filed may be 
so transferred. 

The filing of a caveat is advisable only in such cases 
as stated above, but never when an invention is practically 
completed. 

Patent Agents, who cannot be held responsible to any- 



18 

one for their acts, often unscrupulously urge an inventor 
to file a caveat, if lie does not possess sufficient means to 
defray the expenses of a complete application, or they try 
to induce him to file a caveat as a preliminary or pre- 
requisite step for procuring the patent. 

So important it is to file a caveat for an invention 
which is not yet completed, it should never be done am- 
biguously when an invention is practically completed. In 
this matter, as well as in all matters pertaining to patents, 
every inventor should consult a responsible attorney and 
abide by his advice. 

The prevailing notion that a caveat is a prerequisite 
of an application for a patent, or that a caveat may be 
used for the protection of an invention until the inventor 
satisfies himself that it is commercially valuable, is wrong 
and any such act would be very much adverse to the in- 
terest of the inventor. If, during the time after filing a 
caveat and before filing a complete application for a pat- 
ent, an inventor allows his invention to go into public 
use, his caveat will not protect him from abandonment. 

A caveat affords no protection in the nature of a 
patent; it only serves to establish the proof of priority of 
the conception of an invention. The filing of a caveat is 
practically an admission that the invention is not yet 
completed, whereas the filing of an application for a patent 
is legally assumed to prove that the invention at the time 
of filing the application was practically completed. 

It will be thus seen that by filing a caveat for a com- 
pleted invention (for the ulterior purpose of securing 
"patent protection" for an invention at less cost), an in- 
ventor practically places his claim to the patent in peril, 
because in a case of interference he would be rigorously 
held to his statement made in caveat "that at the time of 
filing of the caveat he considered his invention not yet 
matured and completed." 



THE APPLICATION FOR A PATENT. 

An application for a patent comprises a petition, a 
power of attorney, an explicit description (specifica- 
tion) of the invention, (where the case admits, also an 
illustration thereof by drawings,) and an oath or affirma- 
tion. The petition is addressed to the Commissioner of 
Patents and contains the formal request for the grant of 
the patent. 

The power of attorney may be included in the petition 
or written on a separate sheet, and in that case it must be 
separately signed by the applicant. 

The specification is a written description of the inven- 
tion and of the manner of making and using the same. 
It must contain in its preamble a concise statement of the 
nature and scope of the invention, and be written in such 
full, clear, and exact terms as to enable any person, 
skilled in the art, to which it pertains, to ascertain there- 
from of what the invention consists. 

The specification must explain precisely the invention 
for which the patent is solicited, the principles thereof 
and the manner in which these principles are applied. 
This must be done so as to distinguish clearly the inven- 
tion from what has been known heretofore. 

If the invention consists of an improvement of some 
known article, manufacture, or machine, this must be ex- 
plained in the specification and in the claims; the improv- 
ment must be strictly distinguished from the device, arti- 
cle, machine, etc., as previously known. 

The drafting of specifications and of the claims is of 
the utmost importance, because the scope and validity of 
the patent depend thereon. The specification must con- 
tain all that pertains to the invention, to the way of per- 
forming and using it, and nothing more. The inventor 



20 

may describe therein any other or all means and forms 
known to him of producing the object of his invention, 
but in such case he must point out the means and forms 
he considers best suitable. 

The description must be so complete that an expert in 
the art to which the invention pertains, will be able to 
produce the object of the invention by strictly following 
the specification, and without requiring any further in- 
structions. 

An imperfect specification renders a patent void. 

A failure to describe an essential element of the in- 
vention renders the patent void ; on the other hand again, 
nothing can be considered to have been patented unless 
it is explicitly described in the specification. Ambiguity 
in the specification is fatal to the patent irrespective of 
the intention of the inventor. 

The invention must be explained precisely, the prin- 
ciples thereof and the best mode of producing it, in such 
manner as to distinguish it from other inventions, and it 
must not contain more than what is necessary for this pur- 
pose. Any ambiguity or indistinctness in the specification 
is detrimental and often fatal to the claims of the inven- 
tor. His rights stand and fall with the specification. He 
cannot make any claim that is not founded upon the spec- 
ification, and all that he states and fails to claim becomes 
public property as soon as the patent is issued. 

The expression a I do not limit myself to the form of 
producing my invention as disclosed in my specification, 
etc." whereby unskillful or deceiving attorneys pretend to 
enlarge the scope of a patent, to cover, as they say, every 
possible form and every possible future improvement of 
an invention, is fraudulently misleading, because an in- 
ventor cannot subsequently claim or preserve for himself 
anything which he did not fully and clearly disclose and 
claim in his specification. 

The formulation of claims must be left absolutely to 
the skill, experience and honesty of the attorney. 

The claim or claims are to define the exact scope of 



21 

the invention and the extent of the protection afforded by 
a patent is interpreted from the claim. 

If claims do not define properly or exactly the inven- 
tion, the courts cannot construe it so as to give relief to 
the inventor. 

A patent stands or falls by its claims; even if the claims 
contain less than the actual invention, the courts will 
not admit to enlarge a claim by the description. Defect- 
ive claims are those that usually end with the words "sub- 
stantially as described and for the purposes set forth." 

A proper drawing of the claims requires not only a 
full understanding of the principles and means of pro- 
ducing the invention, but also knowledge of the laws 
and rules pertaining to their formulation, and experience 
in interpreting claims in judicial proceedings. 

The complaint is often heard that a patent for a use- 
ful invention, promising fair returns, cannot be utilized. 
The reason in most of such cases is that the patent is not 
sufficient to prevent infringement, and consequently no 
one cares to risk an investment on it though the invention 
is valuable. 

It seems almost ridiculous, and still it is true very 
often, that an inventor who spent months in patient labor 
and considerable sums of money to produce an invention, 
will sacrifice, or, at least, imperil all prospective rewards 
for his labor and expenses by entrusting his case to some 
irresponsible agent for the sake of saving a few dollars 
on the costs of procuring his patent. 

Patents are like contracts or deeds. As long as there 
is no dispute about it, any patent will do. If, however 
(and this is oftener the case the more valuable an inven- 
tion), any question is raised as to its scope or validity, it 
is subjected to a judicial test the same as a contract or a 
deed when the possession of property is disputed. Patents 
for valuable inventions, such as marketable articles, tools, 
machinery, etc, are subjected to closest scrutiny by op- 
ponents as soon as issued. 

If they are found defective, the whole imagined pro- 
tection is a nullity and competitors in trade appropriate 



22 

the invention, knowing that no attorney will ever be able 
to make out a case thereon to successfully stop such in- 
fringement or enforce damages. The value of such a 
patent will prove to be less than the paper on which it is 
printed. The correction of a defective patent is con- 
siderably more difficult and expensive than the procuring 
of an original patent in good shape; but a defective 
patent, once issued, cannot be corrected otherwise than 
through the process of re-issue. 

It is in the best interest of an inventor to employ a 
competent attorney for prosecution of an application for a 
United States Patent. When suing for an infringment of 
a patent, the complainant must show to the satisfaction of 
the court that all requirements of the law for grant of a 
valid patent have been complied with, otherwise his 
complaint would be defeated and eventually his patent 
declared void on account of such formal defects. 

The specification must be signed by the inventor (or by 
the administrator of his estate), and the signature attested 
by two witnesses. These signatures must be given in full,, 
and must be legibly written. 

A drawing must be furnished with the application 
for a patent whenever the invention requires or ad- 
mits it. There are special rales, formulated as to the 
manner in which said drawings must be executed, and 
rigidly enforced at the Patent Office. No patent is 
allowed until a drawing fully answering the requirements 
of these rules is furnished. The drawings are signed 
by the attorney and attested by two witnesses in a manner 
similar to the specification. 

In some cases, mostly in those of mechanical inventions 
or apparatus, the Patent Office requires the submission of 
a model embodying the invention. Such a model must 
clearly show every feature of the invention, but must not 
include anything else, unless it is absolutely necessary to 
show the operation of the invention. Models must be 
neatly and substantially made, of durable material (metal 
is preferable) and not larger than one cubic foot. 

Models of complicated machines may be made on larger 



23 

scale; for this, however, the permission of the Commis- 
sioner must be first obtained. If a model is made of wood, 
it must be painted or varnished, and all parts must be so 
connected that the joints will not separate under heat or 
moisture. The name of the inventor must be engraved or 
permanently affixed to the model. Models showing the 
manner of operation (working models) are always pre- 
ferable. 

When the invention pertains to a composition of new 
matter, specimens of such composition and of its ingred- 
ients, sufficient in quantity for the purpose of experiment, 
must be furnished at the request of the Patent Office. 

The inventor is required to make an oath or an affirm- 
ation "that he does verily believe himself to be the 
original and first inventor" of that for which he solicits 
the grant of a patent. He must also state "that he does 
not know and does not believe that the invention was ever 
before known or used, and whether the invention has (or 
has not) been patented to himself or others with his 
consent.' 7 If the inventor did obtain, or permited others to 
obtain, a foreign patent previous to his own application, 
he must also state the date and number of such patent. 

The oath or affirmation of an application for a United 
States patent may be made within the United States 
before any person authorized to administer oaths. If the 
applicant resides in a foreign country, the oath must be 
made before a minister, consul or commercial agent of 
the United States holding a commission for such a foreign 
country. 



PROSECUTION OF AN APPLICATION. 

BEFORE an application is entered on the files of the 
Patent Office an examination as to its formality and 
completeness is made and the first government fee, fifteen 
dollars, must be paid. An informal or incomplete applica- 
tion is not filed. 

All pending applications are preserved in secrecy and 
no information is given without written authority from 
the inventor. Such information as required to be given 
in contested cases, is strictly limited to the points and 
matters absolutely necessary for the proper disposition 
in the questions at issue. When the patent is issued, all 
records and documents pertaining thereto become public 
property. 

A filed application receives a serial number and is then 
classified according to the art to which the invention per- 
tains. The case is then taken up in its order for examin- 
ation as to the merits and priority of the invention. The 
examinations are made by examiners, charged with the 
duty to find oat and reveal whether the application conflicts 
with some other or with patents already issued, whether 
the claims are in accordance with the specification and 
properly drawn, and whether there are any other objections 
— formal or otherwise — against the grant of the patent. 

There is, of course, a diversity of character, disposition, 
and also in mode of action, in the large number of men on 
the examining force of the Patent Office. Extreme views 
may be found in the exercise of judgment upon applications 
in both ways; but as a rule, a very large majority of 
the examiners are favorably disposed toward the inventor 
and inclined to liberally interpret the laws and rules 
governing the cases. 



25 

There are some cases designated as 4< privileged, " and 
those are examined before the others; in some divisions 
longer time is required for actions but, on the whole, 
there is a marked disposition to expedite cases in the 
Patent Office. Applications properly presented and cor- 
rectly and diligently prosecuted receive fair consideration. 
In cases of conflict, arguments against an adverse decision 
of the office will receive due attention, the rights of in- 
ventors are generally recognized, and, in cases of doubt, 
the benefit thereof is given to the applicant. 

The result of the examination is communicated to the 
applicant's attorney. The examiner is bound to state fully 
and precisely the reasons, if he has any, against the appli- 
cation or against the claims submitted, and he must also 
cite the references on which he bases his objections, to 
enable the applicant to decide whether to insist on his 
claims or to modify them. In this matter the applicant for 
a patent must depend on and abide by the advice of his 
attorney, who will shape the course according to contin- 
gencies arising in each case. 

Amendments to a specification and to the claims are 
permissible while the application is pending. These amend- 
ments must however be pertinent and substantial. No new 
matter is permitted to be introduced into a case by an 
amendment. 

The application is disposed of in the first instance by 
the Primary Examiner. If he allows the claims as pre- 
sented, or if the applicant modifies his claims in accordance 
with the findings of the Examiner, the application is 
therewith disposed of finally, and the patent is issued in 
due course after the payment of the final fee. 

If the Primary Examiner finally rejects all or any of 
the claims to which the inventor considers himself entitled, 
and insists to have embodied in his patent, he may appeal 
from such adverse decision to the Board of Examiners-in- 
Chief, and eventually further to the Commissioner of 
Patents, and from his decision, if adverse, to the Court of 
Appeals of the District of Columbia. 

In interference cases the same order of appeals and the 
same course of proceedings are observed. 



26 

In these cases, however, the decision of the Commis- 
sioner of Patents is final, and the party defeated has only 
the recourse to a Court of Equity with a bill for an order 
commanding the Commissioner to grant and issue the 
patent desired. 

The grant of a patent may also be enforced by a Bill 
in Equity directed against the Commissioner of Patents, 
or by a Mandamus which is applicable in such cases where 
the Commissioner suspends or refuses the issue of an al- 
lowed patent. 

An appeal must be directed against all points of the 
decision upon which it is taken, and the prescribed fee 
must be paid when the appeal is filed. 

When the appealed decision is reversed, the case is re- 
amended to the Primary Examiner with instructions for 
proper action, and he is then bound to abide by the 
decision. 



ISSUE OF PATENTS. FORFEITURE OF ALLOWANCES 
AND RENEWAL OF APPLICATIONS. 

When the application is allowed, the case is passed to 
issue. The notice of allowance calls for the pay- 
ment of the final fee, $20.00, within six months from the 
date of such notice. If this final fee is paid in due 
time the patent is issued. Every patent must be dated on 
the day of its issue, and this date must not be later than 
six months from the date of the notice of allowance. 

All patents are issued in the name of the United States, 
sealed with the Seal of the United States, signed by the 
Secretary of Interior, and countersigned by the Com- 
missioner of Patents. The issued patent is delivered to 
the attorney of the inventor, or to him directly if so re- 
quested, and confers on the inventor and his legal suc- 
cessors or representatives the exclusive right to make, use 
and vend the invention, or the products thereof, throughout 
the United States and the territories thereof. 

If the final fee is not paid in time for the issue of 
the patent, the allowance (not the patent) will be forfeited. 
In such case, though the patent is not lost, it is placed in 
peril because forfeited applications are not entitled to 
interference, and consequently a subsequent applicant may 
obtain substantially the same patent. A forfeited appli- 
cation may be revived by a petition of any person, whether 
inventor or assignee, who has an interest in the invention 
for which the patent was originally allowed, within two 
years from the date of the allowance of the original appli- 
cation. The original petition, specification and oath may 
be used in such renewal application, but the government 
fee ($15.00) must be paid anew. The renewed application 
is subject to a re- examination like an original application — 
the claims are revised and may be restricted or declared 
in interference with another application or with a patent 
in the same manner as new applications. 



EXTENSIONS. 

THE term of a patent (17 years) cannot be extended 
except by a special Act of Congress. An application 
for extension of the term of a patent must be directed to 
Congress, and the applicant is required to furnish with his 
application a statement (under oath) of the value of in- 
vention, of his receipts and expenditures on account thereof, 
in this (and also in foreign countries, if he obtained for- 
eign patents), a certified abstract of title and a declaration 
under oath, setting forth the extent of his interest in the 
extension. 

If the application is favorably considered by the 
Congressional Committee on Patents, it is referred to 
the Commissioner of Patents for investigation and report 
thereon. 

In the proceedings thereupon instituted by the Com- 
missioner of Patents the application can be opposed by 
anyone interested in the matter, and the applicant must 
prepare himself to defend his case against all comers He 
must show that he has taken all reasonable measures to 
introduce his invention into general use, and that, without 
neglect or fault on his part, he has failed to obtain from 
the use and sale of the invention a reasonable remunera- 
tion for the time, ingenuity and expenses bestowed on the 
same and its introduction into use. 

Those who desire to oppose an application for an ex- 
tension of the term of a patent, must give notice thereof 
in writing before they will be considered as a party to 
the case. The proceedings in such cases are governed 
by rules similar to those established for conduct of cases 
in equity. 



FOREIGN PATENTS. 

THE question whether any and what patents in foreign 
countries an inventor should procure for his inven- 
tion, must be considered from the standpoint, whether the 
industrial and commercial conditions in a particular country 
are favorable to the invention. It is seldom possible for 
an inventor to work his invention in more than one country, 
and the usual practice is, to sell such foreign patents or to 
sell licenses under such patents. 

In many cases in our practice inventors have realized 
from the sale of their foreign patents capital to start the 
manufacture of their invention in this country; on the 
other hand, in some cases foreign patents procured heed- 
lessly may prove an unbearable burden. 

There is one plan, however, that most inventors, who 
have obtained United States Patents may safely follow 
with fair prospect of success and comparatively small risk. 
The commercial and industrial conditions in the United 
States, Canada and England are very much alike and it 
can be accepted as a rule, that any invention promising 
commercial success in the United States will also find ready 
disposition in Canada and England. The laws of Canada 
and England facilitate the procuring of what has been 
termed, "Pro visional Protection" for a period of nine and 
twelve months respectively at very moderate costs. By 
proper arrangement the terms of these "provisional pro- 
tections " can be made nearly concurrent with the term of 
of the United States Patent. The issue of this Patent 
gives the invention wide publicity in this and foreign 
countries, and if the provisional protections in Canada and 
England are procured, they can be disposed of for a fair 
consideration, if the invention is worked in United States 



30 

and some effort is made to introduce it in these countries. 
Provisional protection or caveats for inventions in foreign 
countries can also be procured in all British Colonies, in 
Argentine, Hawaii, Orange Free State, Switzerland, South 
African Republic and Russia. InBolivia, Ecuador, Lux- 
emberg, Norway, Russia, Sweden and Switzerland the 
government reserves to itself the right to buy and use an 
invention for which a patent is applied. 

Next to England, Germany, France and Belgium, and 
for some branches of industry also the southern and eastern 
Colonies of England, Switzerland, Denmark, Sweden and 
Russia, are to be taken into consideration as well promising 
fields for the utilization of inventions. Austria, Italy, 
Spain, Greece and the Spanish countries of Central and 
South America are less promising, and should be taken into 
consideration only in special cases. 

Inventors, whose United States Patents were issued, are 
besieged by circulars and letters of agents presenting to 
them glowing prospects for utilization of these and those 
foreign patents, and pressing them to procure such foreign 
patents, and to intrust them to such agents for sale. We 
cannot but warn inventors from undertaking anything in 
response to such importuning propositions. 

The mutual relations between the United States and 
foreign Letters Patent are complicated; inventors should 
not venture on procuring any foreign patents without the 
advice of their trusted and responsible attorney. 

An inventor who has previously obtained a foreign 
patent for his invention, is not debarred from securing a 
United States Patent for the same invention at any time 
after the issue of his prior foreign patent or patents, if the 
invention has not been in the mean time introduced into 
public use or on sale in the United States for more than 
two years prior to his application for the patent. In such 
case, however, the term of the United States Letters 
Patent is limited to the term of the shortest foreign patent, 
and would be rendered void and inoperative, if any of 
these foreign patents be allowed to lapse before its issue. 

If an inventor procures foreign patents while his appli- 



31 

cation for a United States Patent is pending, be must 
make a proper amendment to his application, stating the 
dates and numbers of any foreign patents procured during 
the pendency of his application. In such case the term of 
his United States Letters Patent will also be reduced to 
the term of the shortest foreign patent, and if after its 
issue any of such foreign patents are declared invalid or 
allowed to lapse, the United States Letter Patent will be 
simultaneously rendered invalid and inoperative. 

To enable inventors, citizens or residents of United 
States, to protect their inventions simultaneously in all 
countries having laws for protection of industrial property, 
the United States has entered (by proclamation of the 
President, dated June 11, 1897) into an agreement with 
the governments of the other countries forming the "Inter- 
national Union for the Protection of Industrial Property." 
Under this agreement an inventor may, after filing his 
application for a United States Patent, obtain certified 
transcripts thereof, one for each of such countries where 
he desires to protect his invention, and then, asking the 
benefit of the final protokol thereof, file these transcripts 
of his application in these countries, whereupon his inven- 
tion will be protected in all of those countries from the 
date on which his application for the United States Patent 
was filed, and in the same manner as if he had on the same 
day filed his application for those foreign patents. This 
beneficial agreement extends equally to mechanical as to 
patents for designs and to copyrights. 



PATENTS FOR DESIGNS. 

WHEKEAS the so-called "Mechanical Patents" are 
granted for the construction of a machine, the sub- 
stance of an article of manufacture, an instrument or de- 
vice, for a process, or the product of a process, Patents for 
Designs protect the outward shape or ' 'configuration' 7 of 
an article ; instrument, device, etc. 

The term " design," in the meaning of the patent law, 
is defined as the delineation of form, shape or figure of an 
article in the plane or section, or in both, and a "Design 
Patent" protects the production of the article in accordance 
with that delineation, form or shape, as expressed in the 
design. For this reason the claim in such a patent must 
always contain the reference, "as shown (in the drawing) 
and described" (in the specification). A design patent 
can cover also such modifications of a design, as would not 
affect its identity, or the elements of a design and their 
combination, if such combination produces the whole of the 
design. 

A design patent protects the reproduction of the design 
in every possible manner and of every possible material; it 
is immaterial whether the design is produced as an article 
of wood, metal or of some plastic or fibrous material, and 
it is also immaterial how the article is produced, whether 
pressed, cast, stamped, woven or carved, as long as the 
form or the shape of the article is produced as represented 
by the design. Changes in colors used in the reproduction 
of a design are immaterial. 

The "identity" of a design for the the purpose of the 
patent law is established by its impression on the mind of 
an ordinary observer, giving attention to it, as a purchaser 
of an article would give. If the resemblance appears to be 



33 

such, that the imitated article could be substituted for 
the one produced under a design patent, this imitated ar- 
ticle must be considered an infringement. 

A design to be patentable must be new and original. 
It must not have been known or used by others before, 
nor patented or described in any printed publication. 
For this purpose a design is always to be considered as 
an entirety. By an addition or rearrangement of details, 
whereby new elements are substituted for others or added 
to the design, a new design is produced, if the new re- 
production appears in its entirety differing from the origi- 
nal. A new design may also be produced by a combina- 
tion of old designs, but not by a mere aggregation of their 
elements. Such a combination, to be patentable, must 
show the exercise of inventive talent. 

Patents for designs are granted for the term of three 
years and six months, for seven or for fourteen years, as 
the applicant elects in his application, but a design patent, 
when once issued for a shorter term, cannot be extended 
subsequently. A complete application for a design pat- 
ent consists of a petition, with power of attorney, a speci- 
fication, a drawing or a photographic reproduction of the 
design and a statement under oath to be made by the in- 
ventor of the design, as to the facts required by law. 

In the petition must be stated for what term the pat- 
ent is desired, in other respects the petition and power of 
attorney are similar to those required in an application 
for a mechanical patent. The specification must describe 
the design, pointing out its essential features with reference 
to the drawing or its photographic reproduction. The 
statement under oath contains the assertion of the in- 
ventor upon his best knowledge and belief that he pro- 
duced the design by his own industry, genius, effort and 
expense, that the same was not known or used by others 
before his invention thereof nor patented or described in 
any printed publication. 

The procedure in the Patent Office upon such applica- 
tion is in substance the same as that in regard to applica- 
tions for mechanical patents. The patent is also issued 



34 

in the same manner and the grant confers upon the pa- 
tentee the exclusive privilege to produce the design or to 
apply it to any article to which it is applicable, and to 
use and sell the article within the territory of the United 
States. 

A design patent can be used to protect an article of 
manufacture, a bust, statue, alto relievo, bas-relief, a pat- 
tern for printing or weaving, an impression, ornament, 
print or picture to be printed, pressed, painted, cast or 
otherwise produced on any article of manufacture. Design 
patents are sometimes resorted to as means of protection 
for improved articles or devices which cannot for some 
reason be covered by a mechanical patent. Though this 
affords a sufficient protection where the shape of the device 
or article is the main feature of its utility, still such pro- 
tection is limited. 

What constitutes an infringement of a design patent and 
the penalty therefor is defined in the amendatory Act of 
Feb. 4, 1887, U. S. Ev. Stat. 24. The infringement 
consists in applying the patented design or any imitation 
thereof to any article of manufacture for the purpose of 
sale, or in selling or exposing for sale of an article, to 
which the design was applied. The infringer is liable in 
the amount of $250.00 if the profit, derived by such infrin- 
gement, shall be less than that sum, and if the profit should 
exceed the sum of $250.00 the infringer is further liable 
for the excess of such profit over and above the sum stated. 
The owner of the patent can recover the full amount of 
such penalty in any Circuit Court of the United States, 
having jurisdiction in the premises. 



MARKING OF PATENTED ARTICLES. 

ALL producers of patented inventions and dealers sell- 
ing such products are required by law to mark every 
such article before sold or exposed for sale with the word 
"Patented" and with the date of the patent. This mark- 
ing is necessary to give the public a notice of the fact that 
the article is protected by a patent and that consequently 
it cannot be reproduced by the purchaser. Where the 
the mark cannot be affixed to or produced on the article 
itself, the requirement of the law is complied with if the 
mark is printed on a label attached to the article, or affixed 
upon the case wherein the article may be contained. 

It is very important to strictly obey these provisions of 
the law, because no damages could be obtained for in- 
fringement of a patent, if it be proven, that articles man- 
ufactured under the patent were sold without the required 
mark. 

The patent law also forbids any person other than the 
owner of the patent, or those manufacturing under his 
license, to mark any imitation of the patented article as 
"patented," to affix thereon the name of the inventor or 
any other mark calculated to deceive purchasers, or any 
mark whatever tending to show, that the article was man- 
ufactured under the patent. Marking of articles that are 
not protected by a patent is also prohibited. 

Inventors or manufacturers of articles for which a 
patent was applied for, but not yet granted, may mark 
such articles with the words "Patent Application filed" 
adding thereto the date and Ser. Number of the applica- 
tion, if they wish to protect themselves against presump- 
tion, that the article was put in use before the patent was 
applied for. Such protection is very important in many 
cases. The marking of articles with the words "Patent 



36 

applied for" is insufficient for any practical purpose, and 
is so much misused for fraudulent purposes, that honest in 
ventors should abstain from using it. 

The penalty for not marking patented articles is the 
loss of the privilege afforded by the patent ; the penalty 
for fraudulently marking articles manufactured either in 
infringement of a patent (imitation) or of articles not 
patented at all, is a fine of $100.00 and costs. The fine 
may be recovered by any person in an action to be insti- 
tuted in a Circuit Court of the United States, in whose 
jurisdiction the offense was committed. 

The prohibition of and the penalty for fraudulent 
marking of articles as patented is founded on the princi- 
ple that the right to mark articles produced under a pat- 
ent is one of the privileges granted to an inventor and 
obligatory upon him. An unauthorized marking of an 
imitated article is a fraud on the inventor, whereas the 
marking of an unpatented article is a fraudulent imposi- 
tion on the public, because the fact that an article is pat- 
ented is an indication to the public of its merit, tending 
to increase its value and to promote its sale and use. 



INFRINGEMENTS ON PATENTED INVENTIONS. 

WE have already stated that a patent does not create 
the right of ownership in an invention, this right 
being created and at the same time acquired by the in- 
ventor by his act of original acquisition, and that the in- 
ventor would be protected in his right of ownership in 
the invention under common law. Such protection, how- 
ever, as the common law affords is inadequate for utilization 
of industrial property. For this reason the inventor must 
obtain a patent for his invention to secure to himself the 
special protection of his right afforded to him by the Pat- 
ent laws. If the inventor would not procure a patent, he 
would be obliged to keep his invention in secrecy to save 
it from abandonment; he could not use it publicly nor sell 
the products thereof, and of course, in such manner could 
not obtain adequate reward for his labors. 

The only protection that common law affords against 
wrongful alienation of an invention is the right of the in- 
ventor to maintain it in secrecy. It grants to him also 
the right of recovery against such persons who by force 
or fraud obtain the possession of his secret. When how- 
ever the inventor sells the product of his invention, he 
conveys thereby to the buyer the right of using it to his 
best advantage, and in any manner that he may choose. 
The reproduction of any not patented article is not pro- 
hibited by law, consequently everybody, to whom an in- 
ventor would sell the embodiment of his invention, could 
reproduce it and use and sell such reproductions at will, 
if able and willing to do so. 

By procuring a Letters Patent the inventor obtains a 
privileged position not only against imitators but also 
against rival inventors. Of this privilege he cannot be 
deprived except by due process of law. The patent grants 
to him an exclusive right (monopoly) "to enjoy without 
loss, diminution, or control by others" the results of his 
inventive acts. The patent confers on him the exclusive 



38 

right "to make, use and sell" tho product of his inven- 
tion, thereby abrogating the common law right of all 
others for the full term of the patent. No one else but 
the patentee, his heirs or assigns, can obtain — except by 
license — the right to make, use and sell the patented in- 
vention, nor anything containing a material or substantial 
part thereof, and nobody can obtain another patent for the 
same invention. 

The Patent Law also provides ample and appropriate 
remedies for the holder of a patent for any acts of others, 
tending to encroach upon his privilege or monopoly. The 
inventor is protected against violation of his exclusive 
privilege, and also against malicious injury to the repu- 
tation of his patented invention. The injury to the rep- 
utation of an invention is called "a slander" and the 
inventor can by an action at Law in a State Court having 
jurisdiction, recover adequate damages for such a wrong. 

Against unauthorized use of the invention in violation 
of his exclusive privilege the inventor can protect himself 
by an injuction to be obtained from a Federal (Circuit) 
Court having jurisdiction in the case. In the same Court 
he can recover adequate damages and restitution to him of 
all profits that an infringer did or might have obtained 
through the infringement of his patent. In these proceed- 
ings his patent is considered as prima facie proof of his 
right. 

The patent grants the exclusive right "to manufacture, 
use and sell" the product of an invention, and therefore, 
whoever undertakes, without first obtaining the inventor's 
consent, to manufacture or to sell or to use the patented 
invention, violates patentee's rights, and is liable for the 
consequences thereof. It is not necessary that the whole 
of an invention be produced, sold or used; any product, 
containing a substantial or material part thereof, is also 
an infringement of the patent. It is not necessary that 
all of these three acts be committed by the same person 
to constitute an infringement: any one of these acts, com- 
mitted in the manner specified in the law, constitutes an 
infringement for which the party will be held responsible. 



THE SCOPE OF A PATENT. 

THE extent of protection afforded by a patent and the 
latitude it allows for changes or modifications in the 
production or use of the invention is termed the u Scope" 
of the patent. The wider its scope the more valuable the 
patent. It is more important that a patent should safely 
protect all important features of an invention than to 
allow wide latitude for changes or modifications in pro- 
ducing it This, however, should never be neglected 
when it can be done, because in practical utilization of an 
invention the product may be vastly improved by chang- 
ing or modifying some part of its construction. 

Some inventors believe that the larger the number of 
claims appended to a patent, the better protection it 
affords. This may be true in some cases, but in most 
cases it will be found wrong policy. 

The Commissioner of Patents called attention to this 
practice, in one of his annual reports. He designated it 
as "deplorable." The report cites instances wherein the 
"claim craze" was practiced to great detriment of the 
rights of inventors, patents for original inventions having 
been so limited by a string of specific claims, that it 
would have been absolutely impossible to change or mod- 
ify even a single part of the construction without vio- 
lating some of the claims. It is seldom possible to draw 
a large number of claims except by most directly specify- 
ing as essential all minor features of the embodiment of an 
invention, which are often without any importance what- 
ever. By inserting such claims in his patent the inventor 
does not enlarge the extent of his protection, he merely 
burdens himself -with restrictions that in many cases prove 
fatal to the utilization of his invention. 

A patent to afford substantial protection must not only 
cover the invention as a whole and the construction of new 



40 

essential parts, but also such combinations of elements as 
co-operate for the production of the object of the invention. 
But this should not be exaggerated for the mere purpose of 
enlarging the number of claims. Whatever is claimed 
specifically is held to be considered by the inventor essen- 
tial to the end or object of his invention. His rights are 
defined by the terms of his claims. If he claims inessen- 
tial parts, or inserts claims, containing such inessential 
parts in combination with others, he cannot discard these 
parts or combinations in practical production of his inven- 
tion; he would thereby imperil the validity of his patent. 
Nor can he complain of an infringement, if someone else 
produces the object of his invention leaving out such 
inessential parts. 

From this explanation it appears clearly, that one 
broad (basic) claim is preferable to an indefinite number 
of specific claims covering some particular features or de- 
tails It will seldom be possible, except in patents for a 
simple article or for a single improvement, to embody all 
features of an invention in one claim ; the law also per- 
mits a repetition of a claim in different forms of lan- 
guage, to more clearly express its meaning; but numerous 
specific claims are as a rule more detrimental by limiting 
the scope of a patent than beneficial in protecting against 
infringement. 

The question is often heard, whether a patented inven- 
tion must be produced exactly in the same shape as shown 
and described in the patent. The answer to this question 
is always dictated by the specification and the claims of 
the patent, and is also a test of its quality. A good pat- 
ent protects the invention "as shown and described" and 
also its permissible modifications. A weak patent is either 
one having insufficient claims to protect the invention "as 
shown and described" or one having specific claims point- 
ing out particularly as essential features of the invention 
almost every screw and every dent. The one will not 
protect against infringement and the other will not permit 
any deviation from the shape or arrangement of parts of 
the invention described in the patent. 



CORRECTION OF DEFECTIVE LETTERS PATENT. 

THE right of the inventor, and the scope of protection 
afforded to him by Letters Patent, is distinctly de- 
nned by the language of his specification and claims as 
construed by judicial authorities. In early times there 
was no remedy provided for an inventor whose Letters 
Patent had been found invalid by reason of faulty or 
defective specification or by reason of faulty or defective 
claims. In the course of time the number of cases in 
which honest inventors were defeated and deprived of 
their rights through ignorance, carelessness or downright 
dishonesty of agents, to whom they intrusted their cases, 
was so large, that Congress recognized the necessity to 
amend the Patent Law, (Acts of 1832, 1836, 1837, 1870 
and of 1874) so as to facilitate correction of defective 
patents. 

Such a correction may now be effected through a 
"Disclaimer" or through a Re-issue. Clerical errors, as 
some times occur by mistake of the employees of the 
Patent Office, are readily corrected upon application, 
when discovered and verified. A material or substantial 
part of an invention, described in a defective patent but 
not claimed therein, may be secured subsequently in a 
separate patent if such part is patentable in itself. 

DISCLAIMERS. 

WHEN an inventor obtained a United States patent 
wherein, through inadvertence or mistake, and 
without any fraudulent or deceptive intention, he claimed 
more as his invention than he had a right to claim at the 
time when his application was filed, his patent, which 
would otherwise be void by reason of excessive claims, 



. 



42 

may be restored to validity as to that part, which is truly 
and justly his invention, if such part is a material or sub- 
stantial part of the contrivance, by "disclaiming" that 
to which he was not legally entitled. This may be done 
by such inventor, his legal successor or representative, 
whether he or they are holders of the whole or of only a 
part of the patent. A disclaimer is recorded in the Patent 
Office on payment of a fee of $10.00, and is then con- 
sidered as a part of the original specification. Such 
disclaimer shall be attested by at least one witness, and 
disclaim all such parts of the invention which should not 
have been claimed originally. 

A disclaimer is thus the proper remedy when the claim 
or claims of a patent embrace more than the actual inven- 
tion disclosed at the time when the application for a 
patent was made. It is based on the theory, that the in- 
ventor thereby relinquishes what he erroneously or inad- 
vertently claimed as his. A disclaimer, to be valid and 
effective in saving a patent (that otherwise would be 
void), must be made as soon as the inventor discovers, or 
is made aware by others, that his claim exceeds that which 
he actually invented. 

RE-ISSUES. 

A PATENT defective in specification or in claims, or in 
** both, can only be corrected by a re-issue, and only 
then if such defects resulted from inadvertence, accident 
or mistake. The invention shown and described in such a 
defective patent but not fully claimed therein, cannot be 
subsequently claimed by the same inventor in a separate 
patent. The proper remedy in such cases can be obtained 
only by an application for a re-issue of the original patent. 
Such re-issue can be procured by the original patentee, his 
legal representatives, or by the assignee of the entire inter- 
est, whenever the original patent is found to be insufficient 
or inoperative. In the proceedings it must be proven be- 
yond any doubt, that the defects are not due to any 
fraudulent or deceptive intention. 

If the original inventor is living at the time, he must 



43 

himself make the application, sign and swear to the speci- 
fication, and if the patent passed in the possession of an 
assignee, a written consent of such an assignee must be 
obtained and filed with the application. The original 
patent must be surrendered with the application. 

In the application for a re-issue all the defects or insuf- 
ficiencies of the patent must be distinctly stated and elabor- 
ately explained. In regard to every one of the stated 
defects, it must be particularly specified, how the mis- 
takes or defects arose, and why they have not been previ- 
ously discovered. The applicant must make an oath of all 
the facts required to substantiate the claim for a re-issue. 

The specification must not under any pretext, contain 
anything more or new beyond the scope of invention dis- 
closed in the original application, but valid claims can be 
made to include such parts of the invention as the original 
patent failed to cover. 

With the application for a re-issue a fee of $30.00 
must be paid and a new set of drawings filed. The draw- 
ings must in substance and scale conform to the drawings 
filed with the original application. 

A re-issue patent is limited to the term of the original 
patent, and is also subject to all such limitations by reason 
of co-related foreign patents, but every patent, or sub- 
division of a patent, issued or re-issued for the whole or 
for a material part of an invention, will have the same 
effect and operation in law on the trial of actions, and in 
the cases of re-issue for any causes thereafter arising, in 
the same manner as if it had been originally issued in 
such amended or divided form. 

In acting upon an application for a re-issue, every 
claim presented, even those submitted in their original 
formulation, are subject to re-examination, references and 
restrictions. The application for a re-issue may also be 
involved in interference with a new, subsequent applica- 
tion for the same or similar invention, either then pend- 
ing or subsequently filed by another inventor. 

The applicant for a United States Patent might have 
included in one application an invention which can be 



44 

divided into independent parts, as, for instance, a 
machine capable of different uses, or an invention compris- 
ing a process and the product of the process, or an article 
of manufacture, and the like. Such applicant may divide 
his application before the original patent is issued, and 
upon payment of the required fees have separate patents 
issued for each selfcontained part of his invention, or he 
may apply for separate re-issues for such parts thereafter. 

This is done in cases where the inventor desires to 
retain a part of his invention, or use it for one purpose, 
independently of another which he can or desires to sell. 
The granting of such request is within the discretion of 
the Commissioner, whether the request is made in the 
original application or in an application for a re-issue. In 
every such case the specification and claims are subject to 
revision and restriction in the same manner as in original 
applications. 



ASSIGNMENT OF PATENT— TRANSFER OF RIGHTS AND 

PRIVILEGES. 

ALETTEKS Patent of United States is assignable by 
a proper instrument in writing. The assignee of the 
whole right, title and interest in the patent acquires by 
the assignment all the rights granted or intended to be 
granted to the inventor. 

If the patent is assigned while the application is yet 
pending, or before the patent is issued, the patent is issued 
to such an assignee (or jointly to him and to the inventor 
if only a part is assigned) if the assignment contains a 
request to that effect and is recorded before the final fee 
is paid. 

An "assignee" may hold the whole or only an un- 
divided part of the right, title and interest in a patent; his 
right is acquired by the assignment of the inventor; it 
includes all privileges and extends to every part of the 
United States. He may make, use and sell, and grant to 
others the right to make use and sell the invention in any 
part of, or within the whole, territory of the United 
States. The assignee of an undivided part — no matter 
how small, or whether the assignment was made before or 
after the grant — is a joint owner with the inventor, grantee 
or subsequent holder of the patent. 

Joint inventors or joint grantees (inventor and assignee 
or joint assignees) are also joint owners (tenants in com- 
mon) of the patent. Joint holders of a patent are not 
necessarily partners; such partnership must be expressly 
stipulated in a contract. The rights of joint holders are 
not limited territorially and include every privilege grant- 
ed, or intended to be granted by the patent. Every one 
of such joint owners may make, use and sell the invention, 



46 

and may also grant licenses to third parties without re- 
sponsibility to the other co-owner or co-owners of the pat- 
ent, if there is not an agreement between them, limiting 
their individual privileges. 

Every assignment, or any other instrument affecting 
the title to a patent, is required to identify the patent by 
number and date, and to be duly recorded in the Books of 
Transfers of Patents in the United States Patent Offices 
within three monts from the date of execution and deliv- 
ery thereof, otherwise it will be void as against all sub- 
sequent holders or bona fide purchasers for a valuable 
consideration without notice. 

A license, granted by a patentee, an assignee or joint 
owner of a patent may confer upon the " licensee" a 
limited or exclusive right and either for the whole or for 
some specified part of the territory of United States. 

This right is determined and limited by the instru- 
ment. He may have all rights granted by the patent or 
only some of them, such as the right to make and use the 
patented invention for himself, or he may have the right 
to make it and sell it to others; or he may have only the 
right to manufacture but not to sell, except as stipulated 
in the license. His rights may be absolute or may depend 
on his discharge of obligations stipulated in the contract. 

Such grants or " licenses" do not require to be recor- 
ed, and are not affected by subsequent transfers of the 
patent, unless the license was granted conditionally and 
was made revocable by a subsequent holder of the patent. 

A mortgagee holds the patent as a security for a loan 
or other obligation. He may become the owner of it or of 
the part mortgaged, as stipulated in the mortgage. 



CONSTRUCTIVE LICENSE. 

THERE are certain acts and omissions defined in Patent 
Law and in the Decisions of Judicial Tribunals 
which imply or constitute a license (or prove the acqui- 
escence) of an inventor granting to others the right to 
exercise or enjoy some or all of the privileges granted to 
him by the patent. 

One form of such implied license is the sale of the 
patented article (or other product of an invention) with- 
out specific restriction. The purchaser of such article or 
product without any special restriction from the inventor 
acquires the right to use and to sell it again. This impli- 
cation of a license is founded in law. If the inventor or 
patentee desires to restrict the purchaser in this right, he 
must make it expressly the condition of the sale that the 
product of his invention is not to be sold again by the 
purchaser. He may also stipulate that only the purchaser 
alone shall have the right to use the article, and he may 
also exact a nominal royalty beside the purchasing price, 
as compensation for the right of use. This provision is 
very important in cases where the object of the invention 
is a manufacturing process or an automaticaly working 
machine. 

The purchaser of a patented apparatus or machine ac- 
quires the right to reproduce such parts of it as may be 
broken or worn out in use; but the question is not yet 
finally settled, how far this right can be exercised, namely 
whether the purchaser may carry on the process of repro- 
duction so far as to reproduce successively the whole 
machine or apparatus, 

If the inventor of an apparatus or of a machine pro- 
duces such apparatus or machine for some one before he 
applies for a patent, he confers thereby upon this party a 



48 

free license to use this apparatus or machine. The subse- 
quent grant of a patent to him will not invalidate this 
license nor give him a right to demand a royalty for the 
use of such apparatus or machine. 

If an employee produces an invention of the material 
and with the tools of his employer, the employer acquires 
thereby the privilege to use that invention in his factory. 
The inventor will have no claim to any compensation for 
such use, nor will he be able to restrain his employer from 
such use after he procures the patent, regardless whether 
he produced his invention before or after he applied for 
the patent. Such license of an employer is only personal 
and not transferable, whereas the license acquired by pur- 
chase without notice or restriction is transferable to others, 
the right to use is however dependent on the possession 
of the original apparatus or machine. 

The employer of an inventor has no legal or equitable 
claim to any invention made by his employee during the 
time of his employment with him, if the employee was not 
expressly hired to produce such invention or if the em- 
ployer violates such an agreement. 

If an employer contracts with his employee and pays 
him for exercising his inventive talent, he acquires an 
equitable interest in any invention that the employee pro- 
duces during such time, and may demand the assignment 
of a patent granted therefor. If a co-partner in business 
produces an invention, using the co-partnership resources 
for the purpose, the co-partnership acquires thereby an 
implied license to use this invention for the benefit of the 
co-partnership. Such license is terminated by dissolution 
of the co-partnership. 



INVENTION. 

AN INVENTION is the collective product of an in- 
ventor's talent, his knowledge of scientific or mechan- 
ical principles, and of his skill in devising the " means" 
wherewith to carry out (reduce to practice) his inventive 
idea. An invention thus consists of the conception of an 
idea and of devising (or adaptation) of means whereby the 
idea is realized in practical manner. The mere conception 
of an idea is not in itself an invention; the devising of 
means, whereby to produce the object of an inventive idea, 
is, for practical purposes and results, the more important 
part of an inventive act. 

There may be two or more inventions developed from 
one and the same inventive idea. A steam engine, a gas 
machine, an oil engine, a compressed air motor, etc , are 
each a different invention, but they all originated from 
one and the same inventive idea — to transform into work 
the expansive power of elastic gases. Such examples are 
very numerous in all industries. Improvements in the 
means for producing the object of an inventive idea may 
also constitute an independent invention. Such improve- 
ments prove often to be more important than the original 
invention. The most notable instance of such inventions 
is the substitution of the screw propeller for paddle wheels 
in propelling vessels. 

No invention should be discarded as of too small im- 
portance, and no inventive idea should be given up if the 
inventor does not succeed readily in producing the object 
of his invention in practical form. 

It is not necessary that the inventor should have him- 
self conceived the primordial idea of the invention. He 
may have received hints or advice concerning the object 
of the invention from others; if he devises the means and 



50 

succeeds first in embodying his idea of these means in a 
useful and practical form, he is the first and true inventor, 
and as such he is entitled to the patent and to all rights 
and privileges arising therefrom. 

This maxim is not to be so construed, that a practical 
mechanic would have a claim to the patent if he produces 
in practical form an invention as directed by another who 
conceived the idea, even if the practical mechanic is re- 
quired to exercise his skill (not his inventive talent) in 
producing the parts designated to carry out the idea of 
the original inventor. In such cases the practical mechanic 
does not have any right to claim even a share in the pat- 
tent. If, however, the efforts to produce the " means" as 
directed by the originator of the inventive idea prove 
futile, and he gives up his experiments, then the practical 
mechanic, if he starts to devise the u means" and succeeds 
therein, then he is the true and first inventor of what he 
accomplishes, and is entitled to the patent. 

The fields of inventions are many and their extent is 
practically unlimited. Every intelligent worker, turning 
his attention to devising of means, wherewith to improve 
his tools, machines, the process of manufacture, the article 
produced, or the apparatus used for the purpose, will by 
diligent exercise of his inventive talent, and guided by 
his experience in the particular trade, succeed in devising 
valuable improvements. He will improve the manufac- 
ture or simplify the process or improve the tools and 
machinery used, thereby saving labor or time. 

The widest range for the exercise of inventive talent is 
offered in the production of new articles of manufacture 
in all lines of trade, especially of articles and implements 
for general use. The variety of such articles of manu- 
facture is very large, and so is the number of inventors 
who achieved prosperity by inventions of this kind. 
Though this field of inventions is very promising as to 
the financial results, inventions pertaining to improve- 
ments in tools, machines and of industrial processes are as 
a rule yet more remunerative. In many instances the 
invention of a single improvement in a machine or in a 



51 

tool secure to the inventor a well paying position besides 
a source of revenue from royalties and other fees. 

An invention, to be patentable, must be complete, 
operative and actual; it must also be new and useful. It 
must be the product of the exercise of inventive talent, 
must involve something more than what is obvious to 
persons skilled in the art to which it relates. The exercise 
of inventive talent must be apparent as distinguished 
from mechanical skill. 

An invention is not always necessarily a new machine, 
a new article of manufacture or a new process; it may be 
an improvement on what is known or used. For example, 
an improvement of a machine, whereby some parts of the 
machine are dispensed with and the remaining re-arranged 
so that they will perform the same work, constitutes a 
patentable invention; the same an improvement, whereby 
some new parts are substituted in a tool or machine, pro- 
ducing either more or better results, or a combination of 
devices or parts, however well known in their applications, 
whereby some new results of their co-operation are obtain- 
ed, would also constitute a patentable invention. 

The adaptation of an old device for a new purpose 
constitutes an invention, if the old device is not used in 
the same manner as it was known before. For instance: 
a ratchet wheel and a pawl are well known machine 
elements; to use them for imparting an intermitent motion 
to a shaft would not constitute an invention, because this 
is a known use of the combination; if, however, this 
device be introduced in a machine for some new purpose, 
for instance, for governing or reversing the motion of a 
screw or roller, such combination of the device with the 
other co-operating parts in the machine would constitute 
an invention. 

A mere aggregation of known elements or a re-arrange- 
ment of a combination with no showing of a new and 
useful result, does not constitute an invention, nor does 
the discovery of a mere elementary or theoretical principle. 
But a demonstration of such a principle in practice as ap- 



52 

plied to some art, machine, manufacture or composition of 
matter, would constitute a patentable invention. 

The application of an inventive idea must be new and 
not known or used before; it must be " created" by the 
inventor. It is immaterial whether the practical embodi- 
ment of an invention is simple or complicated, whether it 
was achieved accidentally or by long and laborious work. 
The law recognizes the fact and not the process by which 
it was accomplished. 

A successful and operative reduction to practice of an 
inventive idea is absolutely essential to the completion of 
an invention; an invention is not completed within the 
meaning of the patent law until this has been done. 
Crude and imperfect experiments are not sufficient to 
create the right to a patent. An inventive idea and the 
results of imperfect experiments (as to the means for ac- 
quiring the ultimate end) may be protected by a caveat, 
but an application for a patent cannot be made until the 
inventive idea is finally embodied in some practically 
applicable form. 



INTERFERENCES. 

IF AN INVENTOR, whose application for a patent 
* was rejected upon reference to an unexpired domestic 
patent, describing and claiming the same (or substantially 
the same) invention, makes claim to the patent, stating 
under oath, that he completed his invention before the 
application was filed, on which the interfering patent was 
granted ; or if two or more contemporary applicants for 
patents (or for re-issues of patents) claim substantially 
the same inventions, or if they present conflicting claims 
for similar parts of different inventions, and the examina- 
tion shows, that each of them would be entitled to such a 
patent or to such a claim, if the patent or the other appli- 
cations would not interfere, then the Primary Examiner 
having charge of the cases, is required to declare such 
applications to be "in interference." Thereupon a pro- 
ceeding is instituted to determine which of the claimants 
is the first and true inventor. 

The parties to an interference are then required to file 
a "Preliminary Statement" as to the dates of their in- 
ventive acts and to prove their claimed priority by testi- 
mony of competent witnesses. The proceeding in Inter- 
ference cases is similar to that in cases of Equity. When 
all testimony is taken, or upon expiration of the time 
allotted for taking such testimony, a hearing is set for 
arguing the case on the basis of the testimony, and then 
judgment is rendered thereon in accordance with the 
proofs upon the following rules : 

Of all rival inventors equally qualified, the one who 
first produced the practical embodiment of his invention 
is entitled to the patent. 

Where the rival claimants reduced their inventive 
ideas to practical form at the same time, the one who can 



54 

prove priority of conception, due diligence in reducing 
it to practice and in applying for the patent, will be ad- 
judged to be the prior inventor. 

Where all parties to an interference are Americans, 
judgment must be awarded to the claimant who proves 
priority of his inventive act. 

When one party is an American and the others foreign- 
ers, the American inventor is entitled to priority, unless 
the foreign invention was known or used in the United 
States or patented or published before his (the American 
Inventor's) conception of the invention. 

If both (or all) claimants are foreigners, the same rule 
prevails as if all be Americans, but if one of them obtained 
a foreign patent, the priority must be awarded to him, 
even if the other was in fact the first inventor. 

If both foreign claimants obtained patents, the one, 
whose patent bears an earlier date, will prevail; if none 
obtained a foreign patent, the one who first introduced his 
invention into the United States will be awarded the 
patent. 

A foreign inventor cannot claim priority of his inven- 
tion against an American inventor beyond the date of his 
foreign patent. If one of the parties, whose applications 
have been declared to be in interference, fails to prosecute 
his case, he will be considered to have abandoned his 
claim, and the judgment will be rendered for the other 
party. An assignee is admitted as a party to an interfer- 
ence when the inventor refuses, neglects or is unable to 
prosecute his case against the other parties. 

When the interference i-s once declared, it will not be 
dissolved without rendering the judgment of priority, either 
upon the testimony or upon written concession of priority 
(confession) or upon written declaration of abandonment 
of the invention by one of the parties to the invention, 
except on motion of the Primary Examiner stating such 
grounds as would have precluded the declaration of the 
interference. 

A decision (judgment) in an interference is binding 
and conclusive upon all parties to the case. From an 



55 

adverse judgment appeals may be taken, successively to 
the Examiners-in-Chief and to the Commissioner of Pat- 
ents in a similar manner as from the rejection of an 
application. If the Commissioner, on appeal from the 
Examiners-in-Chief, confirms the adverse decision, the 
party thus defeated may then proceed further by a Bill in 
Equity against the Commissioner in the Circuit Court of 
the District of Columbia, whose power to grant a patent 
is independent of the powers of the Patent Office. If the 
complainant in such case prevails, a copy of the judgment 
is filed in the Patent Office and the patent is issued pursu- 
ant to the order of the Court. 

An adverse decision may also, at any stage of the pro- 
ceedings, be set aside by a motion for a new trial of the 
case, if the defeated party is able to show such grounds as 
in a Court of Equity would be held sufficient for the 
granting of a new trial. New trials of a disposed case 
are, however, granted only on such grounds and with the 
same restrictions as in courts, the principal ground being 
the disclosure of new and important evidence, fraud or 
mistake in the former trial, and only then such a new trial 
is granted, if it can be shown, that such evidence, fraud or 
mistake would have had bearing on the decision of the 
real points at issue. In presenting the motion for a new 
trial, it must also be proven, beyond any reasonable doubt, 
that due diligence was used then, and nothing neglected 
to procure that evidence or to prevent the fraud or mistake 
during the first trial of the case. 



GOVERNMENT FEES. 

A LL fees required in the procedure in the Patent Office 
**■ must be paid in advance, and no fees so paid are 
refunded, except where money was paid in excess or by 
actual mistake, such as where a payment was demanded 
when not required by law, or by reason of neglect or mis- 
information on the part of the office. These fees are : 

On filing of an application : 

For a mechanical patent, $15.00. 

For a caveat, $10.00. 

For a design patent, $10.00, $15.00 or $30.00, accord- 
ing to the term of the patent. 

For the issue of an allowed patent, $20.00. 

For a re-issue, $30.00. 

On filing of a disclaimer, $10.00. 

Of appeal from the decision of the primary examiner 
to the Examiners-in- Chief, $10.00. 

Of appeal to the Commissioner of Patents, $20.00. 

Of appeal from the decision of the Commissioner of 
Patents to the Court of Appeals, docket fee of $10.00. 

For recording of instruments a fee is required in ac- 
cordance with the extent of the instrument, the smallest 
fee being one dollar. 



CURRENT PUBLICATIONS OF PATENTS. 

AN Official Gazette, containing brief extracts of issued 
patents is published every Tuesday and may be sub- 
scribed by any one. All subscriptions ($5.00 per year in 
advance) must commence with the beginning of a volume; 
none taken for less than three months. Full copies of all 
patents with drawings are issued in monthly volumes, 
price $12.00 per month; copies of single patents, 10 cents 
and postage; these copies may be obtained from the 
patent office or from any attorney or agent. All pay- 
ments are required in advance. 

The publications of the following foreign patents may 
be found in the Scientific Library of the Patent Office: 
Austria-Hungary, Barbadoes, Belgium, British Honduras, 
Canada, Ceylon, Denmark, Finland, France, Germany, 
Great Britain, Hawaii, India, Italy, Jamaica, Japan, 
Luxemburg, Malta, Mauritius, New South Wales, New 
Zealand, Norway, Portugal, Queensland, Russia, South 
Australia, Spain, Strait Settlements, Sweden, Switzer- 
land, Tasmania, Trinidad, Victoria. West Australia. 

Extracts of the Scientific Library may be made under 
the supervision and direction of the Librarian. Such ex- 
tracts must be made only in pencil and must not exceed 
one-third of the description or drawings from which the 
copies are made. Violation of this order will subject all 
persons concerned therein to exclusion from making any 
such extracts or copies whatever. Full copies may be 
obtained at the rate of 10 cents per 100 words from the 
Patent Office, and copies (blueprints) of drawings at 
reasonable cost. 

The Commissioners' Report is now issued every year, 
and contains alphabetical lists of all inventors to whom 
patents were issued, and a list of inventions. 



58 

The report of the Commissioner of Patents for the 
year 1896 contains the following list of inventors who 
have taken out more than 100 patents during the last 25 
years: 

Edward J. Brooks 116 

George D. Burton 128 

Luther C. Crowell 147 

Peter C. Dederick 107 

Thomas A. Edison 711 

Rudolf Eickemeyer 158 

Louis Goddu 131 

Rudolph M. Hunter 228 

John W. Hyatt 198 

Hiram S. Maxim 131 

Arthur J, Moxham 144 

Lewis Hallock Nash 119 

Edwin Norton 125 



Freeborn F. Raymonds, 2d . . 144 

George H. Reynolds 101 

Francis H. Richards 343 

Cyrus W. Saladee 148 

Walter Scott 109 

Charles E. Scribner 248 

Sidney H. Short Ill 

Elihu Thomson 394 

Charles J. Van Depoele 244 

George Westinghouse, Jr. . . . 217 

Edward Weston 274 

William N. Whiteley 118 



It is not an incident that all these inventors are men 
who raised themselves by diligent work and wise atten- 
tion to the protection of their interests from small 
beginnings and reduced circumstances to riches and fame. 




INDEX. 

PAGE 

Preface -----..3 

Introductory -.-... 5 

The Patent Laws of United States - - - 7 

General Rules ------ 10 

Preliminary Examination - - - - - - 14 

Caveats ------- 16 

The Application for a Patent - - - - - 19 

Prosecution of an Application 24 
Issue of Patents. Forfeiture of Allowances and Renewal of Applications 27 

Extensions ------- 28 

Foreign Patents -- - - - - -29 

Patents for Designs ----- 32 

Marking of Patented Articles - 35 

Infringement of Patented Inventions 37 

The Scope of a Patent - - - - - - 39 

Correction of Defective Letters Patent. Disclaimers - - 41 

Re-issues - - - - - - -42 

Assignment of Patent, Transfers of Rights and Privileges - 45 

Constructive License - - - - - - 47 

Invention -------49 

Interferences - - - - - - - 53 

Government Fees ------ 56 

Current Publications of Patents - - - - - 57 



LIBRARY OF CONGRESS 



019 935 717 7 



SCHREITER, VAN IDERSTINE & MATHEWS, 
Btrorncvs ano Counsellors at law, ant* Solicitors of patents, 

20 NASSAU STREET, NEW YORK CITY, 

TELEPHONE, 3246 CORTLANDT. 



WASHINGTON OFFICE : 

McQill Building, 

F & 9th Sts., N. W. 



BROOKLYN OFFICE: 

189 Montague St., 

telephone, 711 brooklyn. 



t 



* 



